707
Examiner’s Letter or Action [R-11.2013]

37 C.F.R. 1.104
Nature of examination.

(a) Examiner’s action.

(1) On taking up an
application for examination or a patent in a reexamination proceeding,
the examiner shall make a thorough study thereof and shall make a
thorough investigation of the available prior art relating to the subject
matter of the claimed invention. The examination shall be complete with
respect both to compliance of the application or patent under
reexamination with the applicable statutes and rules and to the
patentability of the invention as claimed, as well as with respect to
matters of form, unless otherwise indicated.

(2) The applicant, or in
the case of a reexamination proceeding, both the patent owner and the
requester, will be notified of the examiner’s action. The reasons for any
adverse action or any objection or requirement will be stated in an
Office action and such information or references will be given as may be
useful in aiding the applicant, or in the case of a reexamination
proceeding the patent owner, to judge the propriety of continuing the
prosecution.

(3) An international-type
search will be made in all national applications filed on and after June
1, 1978.

(4) Any national
application may also have an international-type search report prepared
thereon at the time of the national examination on the merits, upon
specific written request therefor and payment of the international-type
search report fee set forth in § 1.21(e). The Patent and Trademark Office does
not require that a formal report of an international-type search be
prepared in order to obtain a search fee refund in a later filed
international application.

(b) Completeness of examiner’s action. The
examiner’s action will be complete as to all matters, except that in
appropriate circumstances, such as misjoinder of invention, fundamental defects
in the application, and the like, the action of the examiner may be limited to
such matters before further action is made. However, matters of form need not
be raised by the examiner until a claim is found allowable.

(c) Rejection of claims.

(1) If the invention is
not considered patentable, or not considered patentable as claimed, the
claims, or those considered unpatentable will be
rejected.

(2) In rejecting claims
for want of novelty or for obviousness, the examiner must cite the best
references at his or her command. When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the
particular part relied on must be designated as nearly as practicable.
The pertinence of each reference, if not apparent, must be clearly
explained and each rejected claim specified.

(3) In rejecting claims
the examiner may rely upon admissions by the applicant, or the patent
owner in a reexamination proceeding, as to any matter affecting
patentability and, insofar as rejections in applications are concerned,
may also rely upon facts within his or her knowledge pursuant to
paragraph (d)(2) of this section.

(4)

(i) Subject matter
which would otherwise qualify as prior art under
35 U.S.C. 102(a)(2) and a
claimed invention will be treated as commonly owned for purposes of
35 U.S.C. 102(b)(2)(C) if
the applicant or patent owner provides a statement to the effect
that the subject matter and the claimed invention, not later than
the effective filing date of the claimed invention, were owned by
the same person or subject to an obligation of assignment to the
same person.

(A) The
applicant or patent owner provides a statement to the effect
that the subject matter was developed and the claimed
invention was made by or on behalf of one or more parties to
a joint research agreement, within the meaning of
35 U.S.C. 100(h) and
§ 1.9(e), that was in
effect on or before the effective filing date of the claimed
invention, and the claimed invention was made as a result of
activities undertaken within the scope of the joint research
agreement; and

(B) The
application for patent for the claimed invention discloses or
is amended to disclose the names of the parties to the joint
research agreement.

(5)

(i) Subject matter
which qualifies as prior art under 35 U.S.C.
102(e),
(f), or
(g) in effect prior to
March 16, 2013, and a claimed invention in an application filed on
or after November 29, 1999, or any patent issuing thereon, in an
application filed before November 29, 1999, but pending on December
10, 2004, or any patent issuing thereon, or in any patent granted
on or after December 10, 2004, will be treated as commonly owned
for purposes of 35 U.S.C.
103(c) in effect prior to March 16, 2013, if
the applicant or patent owner provides a statement to the effect
that the subject matter and the claimed invention, at the time the
claimed invention was made, were owned by the same person or
subject to an obligation of assignment to the same
person.

(ii) Subject matter
which qualifies as prior art under 35 U.S.C.
102(e),
(f), or
(g) in effect prior to
March 16, 2013, and a claimed invention in an application pending
on or after December 10, 2004, or in any patent granted on or after
December 10, 2004, will be treated as commonly owned for purposes
of 35 U.S.C. 103(c) in effect
prior to March 16, 2013, on the basis of a joint research agreement
under 35 U.S.C. 103(c)(2) in
effect prior to March 16, 2013, if:

(A) The applicant or
patent owner provides a statement to the effect that the
subject matter and the claimed invention were made by or on
behalf of the parties to a joint research agreement, within
the meaning of 35 U.S.C.
100(h) and §
1.9(e), which was in effect on or
before the date the claimed invention was made, and that the
claimed invention was made as a result of activities
undertaken within the scope of the joint research agreement;
and

(B) The application for
patent for the claimed invention discloses or is amended to
disclose the names of the parties to the joint research
agreement.

(6) Patents issued prior to December
10, 2004, from applications filed prior to November 29, 1999, are subject
to 35
U.S.C. 103(c) in effect on November 28,
1999.

(d) Citation of references.

(1) If domestic patents
are cited by the examiner, their numbers and dates, and the names of the
patentees will be stated. If domestic patent application publications are
cited by the examiner, their publication number, publication date, and
the names of the applicants will be stated. If foreign published
applications or patents are cited, their nationality or country, numbers
and dates, and the names of the patentees will be stated, and such other
data will be furnished as may be necessary to enable the applicant, or in
the case of a reexamination proceeding, the patent owner, to identify the
published applications or patents cited. In citing foreign published
applications or patents, in case only a part of the document is involved,
the particular pages and sheets containing the parts relied upon will be
identified. If printed publications are cited, the author (if any),
title, date, pages or plates, and place of publication, or place where a
copy can be found, will be given.

(2) When a rejection in an
application is based on facts within the personal knowledge of an
employee of the Office, the data shall be as specific as possible, and
the reference must be supported, when called for by the applicant, by the
affidavit of such employee, and such affidavit shall be subject to
contradiction or explanation by the affidavits of the applicant and other
persons.

(e) Reasons for allowance. If the examiner
believes that the record of the prosecution as a whole does not make clear his
or her reasons for allowing a claim or claims, the examiner may set forth such
reasoning. The reasons shall be incorporated into an Office action rejecting
other claims of the application or patent under reexamination or be the subject
of a separate communication to the applicant or patent owner. The applicant or
patent owner may file a statement commenting on the reasons for allowance
within such time as may be specified by the examiner. Failure by the examiner
to respond to any statement commenting on reasons for allowance does not give
rise to any implication.

For Office actions in ex parte reexamination proceedings, see MPEP
§2260, § 2262, and § 2271
and their indents. For Office actions in inter partes
reexamination proceedings, see MPEP § 2660, § 2671,
and §
2673, and their indents.

Under the current first action
procedure, the examiner signifies on the Office Action Summary Form PTOL-326 certain
information including the period set for reply, any attachments, and a “Summary of Action,”
which is the position taken on all the claims.

The examiner, in the exercise of his or
her professional judgment, is permitted to indicate that an interview with applicant’s
representative may result in agreements whereby the application may be placed in condition
for allowance Any resulting amendment may be made either by the applicant’s attorney or
agent or by the examiner in an examiner’s amendment. It should be recognized that when
extensive amendments are necessary it would be preferable if they were filed by the
attorney or agent of record, thereby reducing the professional and clerical workload in the
Office and also providing the file wrapper with a better record, including applicant’s
arguments for allowability as required by 37 CFR 1.111 See
MPEP §
713et seq. for interview practice.

The list of references cited appears on
a separate form, Notice of References Cited, PTO-892 (copy in MPEP
§ 707.05) attached to applicant’s copies of the action. Where
applicable, a Notice of Informal Patent Application is attached to the first
action.

The attachments have the same paper
number and are to be considered as part of the Office action.

Replies to Office actions should include
the application number as well as the 4-digit art unit number and the examiner’s name to
expedite handling within the Office. Further, applicants are encouraged to include the
4-digit confirmation number on every paper filed in the Office. See MPEP §
503 for an explanation of the confirmation
number.

In accordance with the patent statute,
“Whenever, on examination, any claim for a patent is rejected, or any objection . . .
made,” notification of the reasons for rejection and/or objection together with such
information and references as may be useful in judging the propriety of continuing the
prosecution (35 U.S.C. 132) should be
given.

When considered necessary for adequate
information, the particular figure(s) of the drawing(s), and/or page(s) or paragraph(s) of
the reference(s), and/or any relevant comments briefly stated should be included. For
rejections under 35 U.S.C. 103, the way in which a
reference is modified or plural references are combined should be set out.

In exceptional cases, as to satisfy the
requirements under 37 CFR 1.104(c)(2), and in pro se cases where the inventor is unfamiliar with patent law
and practice, a more complete explanation may be needed.

Objections to the disclosure,
explanation of references cited but not applied, indication of allowable subject matter,
requirements (including requirements for restriction if applicable) and any other pertinent
comments may be included. Office Action Summary form PTOL-326, which serves as the first
page of the Office action (although a Form PTOL-90 may be used as a coversheet for the
correspondence address and the mail date of the Office action), is to be used with all
first actions and will identify any allowed claims.

¶ 7.100
Name And Number of Examiner To Be Contacted

Any inquiry concerning this communication should be directed to [1] at telephone number [2].

Examiner Note:

1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.

2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action.
This could be either the non-signatory examiner preparing the action or the signatory examiner.

3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.

¶ 7.101
Telephone Inquiry Contacts- Non 5/4/9 Schedule

Any inquiry concerning this communication or earlier
communications from the examiner should be directed to [1] whose telephone number
is [2]. The examiner can normally be reached on [3] from
[4] to [5].

If attempts to reach the examiner by telephone are
unsuccessful, the examiner’s supervisor, [6], can be reached on [7].
The fax phone number for the organization where this application or proceeding is assigned is
571-273-8300.

Information regarding the status of an application may be
obtained from the Patent Application Information Retrieval (PAIR) system. Status information
for published applications may be obtained from either Private PAIR or Public PAIR. Status
information for unpublished applications is available through Private PAIR only. For more
information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you
have questions on access to the Private PAIR system, contact the Electronic Business Center
(EBC) at 866-217-9197 (toll-free).

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual area code and
phone number.

3. In bracket 3, insert the days that you work every
week, e.g. “Monday-Thursday” for an examiner off every Friday.

¶ 7.102
Telephone Inquiry Contacts- 5/4/9 Schedule

Any inquiry concerning this communication or earlier
communications from the examiner should be directed to [1] whose telephone number
is [2]. The examiner can normally be reached on [3] from
[4] to [5]. The examiner can also be reached on alternate
[6].

If attempts to reach the examiner by telephone are
unsuccessful, the examiner’s supervisor, [7], can be reached on [8].
The fax phone number for the organization where this application or proceeding is assigned is
571-273-8300.

Information regarding the status of an application may be
obtained from the Patent Application Information Retrieval (PAIR) system. Status information
for published applications may be obtained from either Private PAIR or Public PAIR. Status
information for unpublished applications is available through Private PAIR only. For more
information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you
have questions on access to the Private PAIR system, contact the Electronic Business Center
(EBC) at 866-217-9197 (toll-free).

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual area code and
phone number.

3. In bracket 3, insert the days that you work every
week, e.g. “Monday-Thursday” for an examiner off on alternate Fridays.

¶ 7.103
Statute Cited in Prior Action

After the search has been completed,
action is taken in the light of the references found. Where the assistant examiner has
been in the Office but a short time, it is the duty of the primary examiner to review
the application thoroughly. The usual procedure is for the assistant examiner to explain
the invention and discuss the references which he or she regards as most pertinent. The
primary examiner may indicate the action to be taken, whether restriction or election of
species is to be required, or whether the claims are to be considered on their merits.
If action on the merits is to be given and claims rejected, the primary examiner may
indicate how the references are to be applied in any prior art rejection and explain the
basis for any non-prior art grounds of rejection. The primary examiner may authorize
allowance if all the statutory requirements are met and no further field of search is
known.

707.02
Applications Up for Third Action and 5-Year
Applications [R-08.2012]

The supervisory patent examiners
should impress their assistants with the fact that the shortest path to the final
disposition of an application is by finding the best references on the first search and
carefully applying them.

The supervisory patent examiners are
expected to personally check on the pendency of every application which is up for the
third or subsequent Office action with a view to finally concluding its
prosecution.

Any application that has been pending
five years should be carefully studied by the supervisory patent examiner and every
effort should be made to terminate its prosecution. In order to accomplish this result,
the application is to be considered “special” by the examiner.

707.03-707.04
[Reserved]

707.05
Citation of References [R-11.2013]

37 C.F.R. 1.104
Nature of examination.

*****

(d) Citation of references.

(1) If domestic patents
are cited by the examiner, their numbers and dates, and the names of
the patentees will be stated. If domestic patent application
publications are cited by the examiner, their publication number,
publication date, and the names of the applicants will be stated. If
foreign published applications or patents are cited, their nationality
or country, numbers and dates, and the names of the patentees will be
stated, and such other data will be furnished as may be necessary to
enable the applicant, or in the case of a reexamination proceeding,
the patent owner, to identify the published applications or patents
cited. In citing foreign published applications or patents, in case
only a part of the document is involved, the particular pages and
sheets containing the parts relied upon will be identified. If printed
publications are cited, the author (if any), title, date, pages or
plates, and place of publication, or place where a copy can be found,
will be given.

(2) When a rejection in
an application is based on facts within the personal knowledge of an
employee of the Office, the data shall be as specific as possible, and
the reference must be supported, when called for by the applicant, by
the affidavit of such employee, and such affidavit shall be subject to
contradiction or explanation by the affidavits of the applicant and
other persons.

*****

During the examination of an
application or reexamination of a patent, the examiner should cite appropriate prior art
which is nearest to the subject matter defined in the claims. When such prior art is
cited, its pertinence should be explained.

The examiner must consider all the
prior art references (alone and in combination) cited in the application or
reexamination, including those cited by the applicant in a properly submitted
Information Disclosure Statement. See MPEP §
609.

¶ 7.96
Citation of Relevant Prior Art

The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. [1]

Examiner Note:

When such prior art is cited, its relevance should be explained in bracket 1 in accordance with MPEP § 707.05.

Effective June 8, 1995, Public Law
103-465 amended 35 U.S.C. 154 to change the term of
a patent to 20 years measured from the filing date of the earliest U.S. application for
which benefit under 35 U.S.C. 120, 121 or 365(c) is
claimed. The 20-year patent term applies to all utility and plant patents issued on
applications filed on or after June 8, 1995. Effective March 16, 2013, Public Law
112-196 amended Title 35 of the U.S. Code to change U.S. practice from a first to invent
system to a first inventor to file system. In certain circumstances, applicants may
cancel their benefit/priority claim by amending the specification to delete any
references to prior applications. Therefore, examiners should search all applications
based on the actual U.S. filing date of the application rather than on the filing date
of any parent U.S. application for which benefit is claimed or foreign application to
which priority is claimed. Examiners should cite of interest all material prior art
having an effective filing date after the filing date of the U.S. parent application or
the foreign priority application but before the actual filing date of the application
being examined.

Allowed applications should generally
contain a citation of pertinent prior art for printing in the patent, even if no claim
presented during the prosecution was considered unpatentable over such prior art. Only
in those instances where a proper search has not revealed any prior art relevant to the
claimed invention is it appropriate to send an application to issue with no art cited.
In the case where no prior art is cited, the examiner must indicate “None” on a form
PTO-892 and include it in the application file wrapper. Where references have been cited
during the prosecution of parent applications and a continuing application, having no
newly cited references, is ready for allowance, the cited references of the parent
applications should be listed on a form PTO-892. The form should then be placed in the
file of the continuing application. See MPEP § 1302.12. In a
continued prosecution application filed under 37 CFR 1.53(d), it
is not necessary to prepare a new form PTO-892 because the form from the parent
application is in the same file wrapper and will be used by the printer.

In all continuation and
continuation-in-part applications, the parent applications should be reviewed for
pertinent prior art.

Applicants and/or applicants’
attorneys in PCT related national applications may wish to cite the material citations
from the PCT International Search Report by an information disclosure statement under
37
CFR 1.97 and 1.98 in order to ensure consideration by the
examiner.

In those instances where no
information disclosure statement has been filed by the applicant and where documents are
cited in the International Search Report but neither a copy of the documents nor an
English translation (or English family member) is provided, the examiner may exercise
discretion in deciding whether to take necessary steps to obtain the copy and/or
translation.

Copies of documents cited will be
provided as set forth in MPEP § 707.05(a). That is, copies of
documents cited by the examiner will be provided to applicant except where the documents:

707.05(a) Copies of Cited References

Copies of cited foreign patent
documents and non-patent literature references (except as noted below) are
automatically furnished without charge to applicant together with the Office action
in which they are cited. Copies of the cited references are also placed in the
application file for use by the examiner during the prosecution.Copies of U.S.
patents and U.S. patent application publications are not provided in paper to
applicants and are not placed in the application file.

Copies of references cited by
applicant in accordance with MPEP § 609, §
707.05(b) and § 708.02 are
not furnished to applicant with the Office
action. Additionally, copies of references cited in continuation applications if they
had been previously cited in the parent application are not furnished. The examiner
should check the left hand column of form PTO-892 if a copy of the reference is not
to be furnished to the applicant.

Copies of foreign patent documents
and nonpatent literature (NPL) which are cited by the examiner at the time of
allowance will be furnished to applicant with the Office action and be retained in
the image file wrapper. This will apply to all allowance actions, including first
action allowances and Ex ParteQuayle actions.

In the rare instance where no art
is cited in a continuing application, all the references cited during the prosecution
of the parent application will be listed at allowance for printing in the
patent.

To assist in providing copies of ,
or access to, references, the examiner should:

(A) Type the citation of the
references on form PTO-892, “Notice of References Cited” using
OACS;

(B) Include in the eRed
Folder all of the references cited by the examiner which are to be furnished
to the applicant.

(C) After any necessary
review has taken place, forward the action to the TC mailbox for counting.
Any application which is handed in without all of the required references
will be returned to the examiner. The missing reference(s) should be
obtained and the file returned to the technical support staff as quickly as
possible.

¶ 7.82.03
How To Obtain Copies of U.S. Patents and U.S. Patent Application
Publications

In June 2004, the USPTO ceased mailing paper copies of
cited U.S. patents and U.S. patent application publications with all Office actions. See
“USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and
Cease Supplying Paper Copies,” 1282 O.G. 109 (May 18, 2004). Foreign patent documents and
non-patent literature will continue to be provided to the applicant on paper.

All U.S. patents and U.S. patent application publications
are available free of charge from the USPTO web site (www.uspto.gov/patft/index.html), for a
fee from the Office of Public Records (http://ebiz1.uspto.gov/oems25p/index.html), and from
commercial sources. Copies are also available at the Patent and Trademark Resource Centers
(PTRCs). A list of the PTRCs may be found on the USPTO web site
(www.uspto.gov/products/library/ptdl/locations/index.jsp). Additionally, a simple new feature
in the Office’s Private Patent Application Information Retrieval system (PAIR), E-Patent
Reference, is available for downloading and printing of U.S. patents and U.S. patent
application publications cited in U.S. Office Actions.

STEPS TO USE THE E-PATENT REFERENCE
FEATURE

Access to Private PAIR is required to utilize E-Patent
Reference. If you do not already have access to Private PAIR, the Office urges practitioners
and applicants not represented by a practitioner to: (1) obtain a no-cost USPTO Public Key
Infrastructure (PKI) digital certificate; (2) obtain a USPTO customer number; (3) associate
all of their pending and new application filings with their customer number; (4) install free
software (supplied by the Office) required to access Private PAIR and the E-Patent Reference;
and (5) make appropriate arrangements for Internet access.

Instructions for performing the 5 steps:

Step 1: Full instructions for obtaining a PKI digital certificate are available
at the Office’s Electronic Business Center (EBC) web page (www.uspto.gov/ebc/downloads.html).
Note that a notarized signature will be required to obtain a digital
certificate.

Step 2: To get a Customer Number, download and complete the Customer Number
Request form, PTO-SB/125, from the USPTO web site (www.uspto.gov/web/forms/sb0125.pdf). The
completed form can be transmitted by facsimile to the Patent Electronic Business Center at
(571) 273-0177, or mailed to the address on the form. If you are a registered attorney or
agent, your registration number must be associated with your customer number. This association
is accomplished by adding your registration number to the Customer Number Request
form.

Step 3: A description of associating a customer number with the correspondence
address of an application is described at the EBC Web page
(www.uspto.gov/ebc/registration_pair.html).

Step 4: The software for electronic filing is available for downloading at
www.uspto.gov/ebc. Users can also contact the EFS Help Desk at (571) 272-4100 and request a
copy of the software on compact disc. Users will also need Adobe Acrobat Reader, which is
available through a link from the USPTO web site.

Step 5: Internet access will be required which applicants may obtain through a
supplier of their own choice. As images of large documents must be downloaded, high-speed
Internet access is recommended.

The E-Patent Reference feature is accessed using a button
on the Private PAIR screen. Ordinarily all of the cited U.S. patent and U.S. patent
application publication references will be available over the Internet using the Office’s new
E-Patent Reference feature. The size of the references to be downloaded will be displayed by
E-Patent Reference so the download time can be estimated. Applicants and registered
practitioners can select to download all of the references or any combination of cited
references. Selected references will be downloaded as complete documents in Portable Document
Format (PDF). The downloaded documents can be viewed and printed using commercially available
software, such as ADOBE® READER®. ADOBE® READER® is available free of charge from Adobe
Systems Incorporated (www.adobe.com/products/acrobat/readermain.html).

Examiner Note:

This form paragraph is recommended for use in Office
actions citing U.S. patents or U.S. patent application publications when the applicant is
not represented by a registered patent attorney or a registered patent
agent.

707.05(b) Citation of Related Art and Information by Applicants

I.
CITATION OF RELATED ART BY APPLICANTS

MPEP
§ 609 sets forth guidelines for applicants, their
attorneys and agents who desire to submit prior art for consideration by the U.S.
Patent and Trademark Office.

Submitted citations will not in
any way diminish the obligation of examiners to conduct independent prior art
searches, or relieve examiners of citing other pertinent prior art of which they
may be aware.

Prior art submitted by
applicant in the manner provided in MPEP § 609 will
not be supplied with an Office action.

II.
CITATION OF RELATED INFORMATION BY APPLICANTS

37 CFR
1.105 and MPEP § 704.10et seq. set forth procedures for examiners to
require applicants, their attorneys and agents to submit information reasonably
necessary for the Office to examine an application or treat a matter being
addressed in an application.

Any such requirement, and any
information submitted in reply thereto, will not in any way diminish the
obligation of examiners to conduct independent prior art searches, or relieve
examiners of citing other pertinent prior art of which they may be
aware.

Information submitted by
applicant in the manner provided in MPEP § 704.10et seq. will not be supplied with an Office
action.

707.05(c) Order of Listing

In citing references for the first
time, the identifying data of the citation should be placed on form PTO-892 “Notice
of References Cited,” a copy of which will be attached to the Office action. No
distinction is to be made between references on which a claim is rejected and those
formerly referred to as “pertinent.” With the exception of applicant submitted
citations, MPEP § 609 and §
708.02, it is recommended that the pertinent features of
references which are not used as a basis for rejection be pointed out
briefly.

707.05(d) Reference Cited in Subsequent Actions

Where an applicant in an
amendatory paper refers to a reference that is subsequently relied upon by the
examiner, such reference shall be cited by the examiner in the usual manner using a
form PTO-892, “Notice of References Cited,” unless applicant has listed the reference
on a form PTO/SB/08 that has been initialed by the examiner.

I.
U.S. PATENT DOCUMENTS

If a U.S. patent application
publication is cited by the examiner, the publication number, publication date,
name of the applicant, class, and subclass should be cited under the section “U.S.
Patent Documents” on the form PTO-892. For U.S. patents, the patent number, patent
date, name of the patentee, and the relevant classification should also be cited
under the same section. In addition, examiners are encouraged to cite the kind
codes printed on U.S. patent application publications and patents. See
MPEP § 901.04(a) for an explanation of the kind codes.
See MPEP § 901.04 for details concerning the various series
of U.S. patents and how to cite them. Note that patents of the X-Series (dated
prior to July 4, 1836) are not to be cited by
number. Some U.S. patents issued in 1861 have two numbers thereon. The larger
number should be cited.

Defensive Publications and
Statutory Invention Registrations (SIRs) should be cited under the section “U.S.
Patent Documents” on the form PTO-892 (see MPEP § 711.06(a)
and § 901.06(a)).

II.
FOREIGN PATENTS AND FOREIGN PUBLISHED
APPLICATIONS

In citing foreign patents, the
patent number, kind code, citation date, name of the country, name of the
patentee, and the relevant classification, if appropriate, must be given. Foreign
patents searched in those Technology Centers (TCs) using the International Patent
Classification (IPC) will be cited using the appropriate IPC
subclass/group/subgroup. On the application’s
"Search
Notes"
FWF form and PTO-892, the IPC
subclass/group/subgroup shall be cited in the spaces provided for
“Classification.”

Where less than the entire
disclosure of the reference is relied upon, the sheet and page numbers
specifically relied upon and the total number of sheets of drawing and pages of
specification must be included (except applicant submitted citations). If the
entire disclosure is relied on, the total number of sheets and pages are not
required to be included on the PTO-892.

Publications such as German
allowed applications and Belgian and Netherlands printed specifications should be
similarly handled.

See MPEP §
901.05(a) for a chart in which foreign language terms
indicative of foreign patent and publication dates to be cited are
listed.

III.
PUBLICATIONS

Abstracts, abbreviatures, Alien
Property Custodian publications, withdrawn U.S. patents, withdrawn U.S. patent
application publications, and other non-patent documents should be cited under the
section “Non-Patent Documents” on the form PTO-892). See MPEP §
711.06(a) for citation of abstracts, and abbreviatures.
See MPEP § 901.06(c) for citation of Alien Property
Custodian publications. In citing a publication, sufficient information should be
given to determine the identity and facilitate the location of the publication.
For books, the data required by 37 CFR
1.104(d) (MPEP § 707.05)
with the specific pages relied on identified together with the Scientific and
Technical Information Center (STIC) call number will suffice. The call number
appears on the “spine” of the book if the book is thick enough and, in any event,
on the back of the title page. Books on interlibrary loan will be marked with the
call numbers of the other library, of course. THIS NUMBER SHOULD NOT BE CITED. The
same convention should be followed in citing articles from periodicals. The call
number should be cited for periodicals owned by the STIC, but not for periodicals
borrowed from other libraries. In citing periodicals, information sufficient to
identify the article includes the author(s) and title of the article and the
title, volume number issue number, date, and pages of the periodical. If the copy
relied on is located only in the Technology Center making the action (there may be
no call number), the additional information, “Copy in Technology Center — —”
should be given.

The following are examples of
how withdrawn U.S. patents and withdrawn U.S. patent application publications
should be cited:

(A) Withdrawn U.S. patents:

US 6,999,999, 10/2002, Brown
et al., 403/155 (withdrawn).

(B)
Withdrawn U.S. patents application publications:

US 2002/0009999 A1, 7/2002,
Jones et al., 403/155 (withdrawn).

Titles of books and periodicals
SHOULD NOT be abbreviated because an abbreviation such as P.S.E.B.M. will not be
sufficient to identify the publication. References are to be cited so that anyone
reading a patent may identify and retrieve the publications cited. Bibliographic
information provided must be at least enough to identify the publication. author,
title and date. For books, minimal information includes the author, title, and
date. For periodicals, at least the title of the periodical, the volume number,
date, and pages should be given. These minimal citations may be made ONLY IF the
complete bibliographic details are unknown or unavailable.

Where a nonpatent literature
reference with a document identification number is cited, the identification
number and the class and subclass should be included on form PTO-892. For example,
the citation should be as follows: (S00840001) Winslow, C.E.A. Fresh Air and
Ventilation N.Y., E.P. Dutton, 1926, p. 97-112, TH 7653, W5,
315/22.

If the original publication is
located outside the Office, the examiner should immediately make or order a
photocopy of at least the portion relied upon and indicate the class and subclass
in which it will be filed, if any.

IV.
ELECTRONIC DOCUMENTS

An electronic document is one
that can be retrieved from an online source (e.g., the Internet, online database,
etc.) or sources found on electronic storage media (e.g., CD-ROM, magnetic disk or
tape, etc.). Many references in paper format may also be retrieved as electronic
documents. Other references are retrievable only from electronic sources.

The U.S. Patent and Trademark
Office follows the format recommended by World Intellectual Property Organization
(WIPO) Standard ST.14, “Recommendation for the Inclusion of References Cited in
Patent Documents.” The format for the citation of an electronic document is as
similar as possible to the format used for paper documents of the same type, but
with the addition of the following information in the locations indicated, where
appropriate:

(A) the type of electronic
medium provided in square brackets [ ] after the title of the publication
or the designation of the host document, e.g., [online], [CD-ROM],
[disk], [magnetic tape]. If desired, the type of publication (e.g.,
monograph, serial, database, electronic mail, computer program, bulletin
board) may also be specified in the type of medium designator
;

(B) the date when the
document was retrieved from the electronic media in square brackets
following after the date of publication, e.g., [retrieved on March 4,
1998], [retrieved on 1998-03-04]. The four-digit year must always be
given.

(C) identification of the
source of the document using the words “Retrieved from” and its address
where applicable. This item will precede the citation of the relevant
passages.

(E) if considered necessary, the
standard identifier and number assigned to the item, e.g., ISBN
2-7654-0537-9, ISSN 1045-1064. It should be noted that these numbers may
differ for the same title in the printed and electronic
versions.

(F) where multiple renderings of
the same document are published (e.g., PDF and HTML), an indication of
the format (e.g., paper, PDF) and the location of the cited
document.

(G) use paragraph numbers, sentence
numbers and line numbers (if available) to describe the specific location
of the cited material within an electronic document.

(I) specific headings within the
document structure such as Best Mode of Performing the Invention or
Industrial Applicability can be indicated if page, paragraph, and line
numbers are not available in a cited patent document in electronic
format.

(J) specific passages of
the text can be indicated if the format of the document includes
pagination or an equivalent internal referencing system, or by the first
and last words of the passage cited.

Office copies of an electronic
document must be retained if the same document may not be available for retrieval
in the future. This is especially important for sources such as the Internet and
online databases.

If an electronic document is
also available in paper form it does not need to be identified as an electronic
document, unless it is considered desirable or useful to do so.

707.05(f) [Reserved]

707.05(g) Incorrect Citation of References

Where an error in citation of a
reference is brought to the attention of the Office by applicant, a letter correcting
the error, together with a correct copy of the reference, is sent to applicant. See
MPEP
§ 710.06. Where the error is discovered by the examiner,
applicant is also notified and the period for reply restarted. See
MPEP
§ 710.06.

One or more of form paragraphs
7.81, 7.82, 7.82.01, and 7.83 may be used to
correct citations or copies of references cited.

¶ 7.81
Correction Letter Re Last Office Action

In response to applicant’s [1] regarding the last Office action, the following corrective action is taken.

The period for reply of [2] MONTHS set in said Office action is restarted to begin with the mailing date of this letter.

Examiner Note:

3. If a copy of the PTO-892 is being provided without correction, use form paragraph 7.83 instead of this form paragraph.

4. Also use form paragraph 7.82.01 if reference copies are being supplied.

¶ 7.82.01
Copy of Reference(s) Furnished

Copies of the following references not previously supplied are enclosed:

Examiner Note:

1. The USPTO ceased mailing paper copies of U.S. patents and U.S. application publications cited in Office Actions in nonprovisional
applications beginning in June 2004. See the phase-in schedule of the E-Patent Reference program provided in “USPTO to Provide
Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies,” 1282 O.G. 109 (May
18, 2004). Therefore, this form paragraph should only be used for foreign patent documents, non-patent literature, pending
applications that are not stored in the image file wrapper (IFW) system, and other information not previously supplied.

2. The reference copies being supplied must be listed following this form paragraph.

3. This form paragraph must be preceded by form paragraph 7.81 and may also be used with form paragraphs 7.82 or 7.83.

¶ 7.83
Copy of Office Action Supplied

[1] of the last Office action is enclosed.

Examiner Note:

1. In bracket 1, explain what is enclosed. For example:

“A corrected copy”

“A complete copy”

A specific page or pages, e.g., “Pages 3-5”

“A Notice of References Cited, Form PTO-892”

2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01.

In any application otherwise ready
for issue, in which the erroneous citation has not been formally corrected in an
official paper, the examiner is directed to correct the citation by examiner’s
amendment accompanying the Notice of Allowability form PTOL-37.

If a FOREIGN patent is incorrectly
cited: for example, the wrong country is indicated or the country omitted from the
citation, the General Reference Branch of the Scientific and Technical Library may be
helpful. The date and number of the patent are often sufficient to determine the
correct country which granted the patent.

In citing court decisions, when it is
convenient to do so, the U.S. or Federal Reporter citation should be provided; in the
alternative, the USPQ citation should be given.

The citation of decisions which are
not available to the public should be avoided.

It is important to recognize that a
federal district court decision that has been reversed on appeal cannot be cited as
authority.

In citing a decision which is
available to the public but which has not been published, the tribunal rendering the
decision and complete data identifying the paper should be given. Thus, a decision of
the Patent Trial and Appeal Board which has not been published but which is available to
the public in the patented file should be cited, as “ Ex
parte — — , decision of the Patent Trial and Appeal Board, Patent No. — — —
, paper No. — — , — — — pages.”

Decisions found only in patented
files should be cited only when there is no published decision on the same point.

When a Director’s order, notice or
memorandum not yet incorporated into this manual is cited in any official action, the
title and date of the order, notice or memorandum should be given. When appropriate
other data, such as a specific issue of the Official
Gazette may also be given.

707.07
Completeness and Clarity of Examiner’s Action [R-08.2012]

37 C.F.R. 1.104
Nature of examination.

*****

(b) Completeness of examiner’s action. The
examiner’s action will be complete as to all matters, except that in
appropriate circumstances, such as misjoinder of invention, fundamental
defects in the application, and the like, the action of the examiner may be
limited to such matters before further action is made. However, matters of
form need not be raised by the examiner until a claim is found
allowable.

*****

707.07(a) Complete Action on Formal Matters

Any form that lists informalities
and any additional formal requirements which the examiner desires to make should be
included in the first action.

When any formal requirement is
made in an examiner’s action, that action should, in all cases where it indicates
allowable subject matter, call attention to 37 CFR 1.111(b)
and state that a complete reply must either comply with all formal requirements or
specifically traverse each requirement not complied with.

¶ 7.43.03
Allowable Subject Matter, Formal Requirements Outstanding

As allowable subject matter has been indicated, applicant’s reply must either comply with all formal requirements or specifically
traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).

Examiner Note:

This form paragraph would be appropriate when changes (for example, drawing corrections or corrections to the specification)
must be made prior to allowance.

707.07(b) - 707.07(c) [Reserved]

707.07(d) Language To Be Used in Rejecting Claims

Where a claim is refused for any
reason relating to the merits thereof it should be “rejected” and the ground of
rejection fully and clearly stated, and the word “reject” must be used. The examiner
should designate the statutory basis for any
ground of rejection by express reference to a section of 35 U.S.C. in the opening
sentence of each ground of rejection. Claims should not be grouped together in a
common rejection unless that rejection is equally applicable to all claims in the
group.

The burden is on the Office to establish any
prima facie case of unpatentability (see, e.g., MPEP §
2103), thus the reasoning behind any rejection must be
clearly articulated. For example, if the claim is rejected as broader than the
enabling disclosure, the reason for so holding should be explained; if rejected as
indefinite the examiner should point out wherein the indefiniteness resides; or if
rejected as incomplete, the element or elements lacking should be specified, or the
applicant be otherwise advised as to what the claim requires to render it
complete.

Everything of a personal nature
must be avoided. Whatever may be the examiner’s view as to the utter lack of
patentable merit in the disclosure of the application examined, he or she should not
express in the record the opinion that the application is, or appears to be, devoid
of patentable subject matter. Nor should he or she express doubts as to the
allowability of allowed claims or state that every doubt has been resolved in favor
of the applicant in granting him or her the claims allowed.

The examiner should, as a part of
the first Office action on the merits, identify any claims which he or she judges, as
presently recited, to be allowable and/or should suggest any way in which he or she
considers that rejected claims may be amended to make them allowable.

707.07(e) Note All Outstanding Requirements

In taking up an amended
application for action the examiner should note in every letter all the requirements
outstanding against the application. Every point in the prior action of an examiner
which is still applicable must be repeated or referred to, to prevent the implied
waiver of the requirement. Such requirements
include requirements for information under 37 CFR 1.105 and
MPEP
§ 704.10; however the examiner should determine whether any
such requirement has been satisfied by a negative reply under 37 CFR
1.105(a)(3).

As soon as allowable subject
matter is found, correction of all informalities then present should be required.

707.07(f) Answer All Material Traversed

In order to provide a complete
application file history and to enhance the clarity of the prosecution history
record, an examiner must provide clear explanations of all actions taken by the
examiner during prosecution of an application.

Where the requirements are
traversed, or suspension thereof requested, the examiner should make proper reference
thereto in his or her action on the amendment.

Where the applicant traverses any
rejection, the examiner should, if he or she repeats the rejection, take note of the
applicant’s argument and answer the substance of it.

If applicant’s arguments are
persuasive and upon reconsideration of the rejection, the examiner determines that
the previous rejection should be withdrawn, the examiner must provide in the next
Office communication the reasons why the previous rejection is withdrawn by referring
specifically to the page(s) and line(s) of applicant’s remarks which form the basis
for withdrawing the rejection. It is not acceptable for the examiner to merely
indicate that all of applicant’s remarks form the basis for withdrawing the previous
rejection. Form paragraph 7.38.01 may be used. If the
withdrawal of the previous rejection results in the allowance of the claims, the
reasons, which form the basis for the withdrawal of the previous rejection, may be
included in a reasons for allowance. See MPEP § 1302.14. If
applicant’s arguments are persuasive and the examiner determines that the previous
rejection should be withdrawn but that, upon further consideration, a new ground of
rejection should be made, form paragraph 7.38.02 may be
used. See MPEP § 706.07(a) to determine
whether the Office action may be made final.

If a rejection of record is to be
applied to a new or amended claim, specific identification of that ground of
rejection, as by citation of the paragraph in the former Office letter in which the
rejection was originally stated, should be given.

ANSWERING ASSERTED ADVANTAGES

After an Office action, the
reply (in addition to making amendments, etc.) may frequently include arguments
and affidavits to the effect that the prior art cited by the examiner does not
teach how to obtain or does not inherently yield one or more advantages (new or
improved results, functions or effects), which advantages are urged to warrant
issue of a patent on the allegedly novel subject matter claimed.

If it is the examiner’s
considered opinion that the asserted advantages are not sufficient to overcome the
rejection(s) of record, he or she should state the reasons for his or her position
in the record, preferably in the action following the assertion or argument
relative to such advantages. By so doing the applicant will know that the asserted
advantages have actually been considered by the examiner and, if appeal is taken,
the Patent Trial and Appeal Board will also be advised. See MPEP §
716 et seq. for the treatment of affidavits and
declarations under 37 CFR 1.132.

The importance of answering
applicant’s arguments is illustrated by In re
Herrmann, 261 F.2d 598, 120 USPQ 182 (CCPA 1958) where the applicant
urged that the subject matter claimed produced new and useful results. The court
noted that since applicant’s statement of advantages was not questioned by the
examiner or the Board, it was constrained to accept the statement at face value
and therefore found certain claims to be allowable. See also In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688
(Fed. Cir. 1995) (Office failed to rebut applicant’s argument).

Form paragraphs
7.37 through 7.37.13 may be
used where applicant’s arguments are not persuasive.

Form paragraphs
7.38 through 7.38.02 may be
used where applicant’s arguments are moot or persuasive.

¶ 7.37
Arguments Are Not Persuasive

Applicant’s arguments filed [1] have been fully considered but they are not persuasive. [2]

Examiner Note:

1. The examiner must address all arguments which have not already been responded to in the statement of the rejection.

2. In bracket 2, provide explanation as to non-persuasiveness.

¶ 7.38
Arguments Are Moot Because of New Ground(s) of Rejection

Applicant’s arguments with respect to claim [1]
have been considered but are moot because the arguments do not apply to any of the
references being used in the current rejection.

Examiner Note:

The examiner must, however, address any arguments
presented by the applicant which are still relevant to any references being
applied.

¶ 7.38.02
Arguments Persuasive, New Ground(s) of Rejection

Applicant’s arguments, see [1], filed [2], with respect to the rejection(s) of claim(s) [3] under [4] have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration,
a new ground(s) of rejection is made in view of [5].

Examiner Note:

1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous
rejection.

2. In bracket 3, insert the claim number(s).

3. In bracket 4, insert the statutory basis for the previous rejection.

4. In bracket 5, insert the new ground(s) of rejection, e.g., different interpretation of the previously applied reference, newly
found prior art reference(s), and provide an explanation of the rejection.

¶ 7.37.01
Unpersuasive Argument: Age of Reference(s)

In response to applicant’s argument based upon the age of the references, contentions that the reference patents are old are
not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge
of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.02
Unpersuasive Argument: Bodily Incorporation

In response to applicant’s argument that [1], the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure
of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.
See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).

Examiner Note:

1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of bodily incorporation.

¶ 7.37.03
Unpersuasive Argument: Hindsight Reasoning

In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning,
it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning.
But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention
was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See
In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).

Examiner Note:

In response to applicant’s argument that there is no
teaching, suggestion, or motivation to combine the references, the examiner recognizes that
obviousness may be established by combining or modifying the teachings of the prior art to
produce the claimed invention where there is some teaching, suggestion, or motivation to do so
found either in the references themselves or in the knowledge generally available to one of
ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596
(Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992),
and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385
(2007). In this case, [1].

Examiner Note:

1. In bracket 1, explain where the teaching, suggestion,
or motivation for the rejection is found, either in the references, or in the knowledge
generally available to one of ordinary skill in the art.

¶ 7.37.05
Unpersuasive Argument: Nonanalogous Art

In response to applicant’s argument that [1] is nonanalogous art, it has been held that a prior art reference must either be in the field of applicant’s endeavor or,
if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied
upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, [2].

Examiner Note:

1. In bracket 1, enter the name of the reference which applicant alleges is nonanalogous.

¶ 7.37.06
Unpersuasive Argument: Number of References

In response to applicant’s argument that the examiner has combined an excessive number of references, reliance on a large
number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

In response to applicant’s argument that [1], the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).

Examiner Note:

1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of results not contemplated by the prior art.

¶ 7.37.08
Unpersuasive Argument: Arguing Limitations Which Are Not Claimed

In response to applicant’s argument that the references fail to show certain features of applicant’s invention, it is noted
that the features upon which applicant relies (i.e., [1]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).

Examiner Note:

1. In bracket 1, recite the features upon which applicant relies, but which are not recited in the claim(s).

¶ 7.37.09
Unpersuasive Argument: Intended Use

In response to applicant’s argument that [1], a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention
and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure
is capable of performing the intended use, then it meets the claim.

Examiner Note:

1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of intended use.

¶ 7.37.10
Unpersuasive Argument: Limitation(s) in Preamble

In response to applicant’s arguments, the recitation [1] has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded
any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body
of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are
able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).

Examiner Note:

1. In bracket 1, briefly restate the recitation about which applicant is arguing.

¶ 7.37.11
Unpersuasive Argument: General Allegation of Patentability

Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out
how the language of the claims patentably distinguishes them from the references.

Examiner Note:

¶ 7.37.12
Unpersuasive Argument: Novelty Not Clearly Pointed Out

Applicant’s arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state
of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such
references or objections.

Examiner Note:

707.07(g) Piecemeal Examination

Piecemeal examination should be
avoided as much as possible. The examiner ordinarily should reject each claim on all
valid grounds available, avoiding, however, undue multiplication of references. (See
MPEP § 904.03.) Rejections on grounds such as lack of
proper disclosure, lack of enablement, indefiniteness and res
judicata should be applied where appropriate even though there may be a
seemingly sufficient rejection on the basis of prior art. Where a non-prior art
ground of rejection is proper, it should be stated with a full development of reasons
rather than by a mere conclusion coupled with a boiler plate
expression.

Certain technical rejections (e.g.
negative limitations, indefiniteness) should not be made where the examiner,
recognizing the limitations of the English language, is not aware of an improved
manner of reciting the claimed invention.

Some situations exist where
examination of an application appears best accomplished by limiting action on the
claim thereof to a particular issue. These situations include the
following:

(A) Where an application is
too informal for a complete action on the merits. See MPEP §
702.01;

(B) Where there is an undue
multiplicity of claims, and there has been no successful telephone request
for election of a limited number of claims for full examination. See
MPEP §
2173.05(n);

(C) Where there is a
misjoinder of inventions and there has been no successful telephone request
for election. See MPEP § 803,
§ 810,
§ 812.01;

(D) Where disclosure is
directed to perpetual motion. See Ex parte
Payne, 1904 C.D. 42, 108 O.G. 1049 (Comm’r Pat. 1903). However,
in such cases, the best prior art readily available should be cited and its
pertinency pointed out without specifically applying it to the
claims.

On the other hand, a rejection on
the grounds of res judicata, no prima facie showing for reissue, new matter, or
inoperativeness (not involving perpetual motion) should be accompanied by rejection
on all other available grounds.

707.07(h) Notify of Inaccuracies in Amendment

707.07(i) Each Claim To Be Mentioned in Each Office Action

In every Office action, each
pending claim should be mentioned by number, and its treatment or status given. Since
a claim retains its original numeral throughout the prosecution of the application,
its history through successive actions is thus easily traceable. Each action should
include a summary of the status of all claims presented for examination. Form PTO-326
“Office Action Summary” should be used.

See MPEP Chapter
2300 for treatment of claims in the application of losing
party in interference.

The Index of Claims should be kept
up to date as set forth in MPEP § 719.04.

707.07(j) State When Claims Are Allowable

I.
INVENTOR FILED APPLICATIONS

When, during the examination of
a pro se application it becomes apparent to the
examiner that there is patentable subject matter disclosed in the application, the
examiner should draft one or more claims for the applicant and indicate in his or
her action that such claims would be allowed if incorporated in the application by
amendment.

This practice will expedite
prosecution and offer a service to individual inventors not represented by a
registered patent attorney or agent. Although this practice may be desirable and
is permissible in any case deemed appropriate by the examiner, it is especially
useful in all cases where it is apparent that the applicant is unfamiliar with the
proper preparation and prosecution of patent applications.

II.
ALLOWABLE EXCEPT AS TO FORM

When an application discloses
patentable subject matter and it is apparent from the claims and applicant’s
arguments that the claims are intended to be directed to such patentable subject
matter, but the claims in their present form cannot be allowed because of defects
in form or omission of a limitation, the examiner should not stop with a bare
objection or rejection of the claims. The examiner’s action should be constructive
in nature and, when possible, should offer a definite suggestion for correction.
Further, an examiner’s suggestion of allowable subject matter may justify
indicating the possible desirability of an interview to accelerate early agreement
on allowable claims.

If the examiner is satisfied
after the search has been completed that patentable subject matter has been
disclosed and the record indicates that the applicant intends to claim such
subject matter, the examiner may note in the Office action that certain aspects or
features of the patentable invention have not been claimed and that if properly
claimed such claims may be given favorable consideration.

If a claim is otherwise
allowable but is dependent on a canceled claim or on a rejected claim, the Office
action should state that the claim would be allowable if rewritten in independent
form.

III.
EARLY ALLOWANCE OF CLAIMS

Where the examiner is satisfied
that the prior art has been fully developed and some of the claims are clearly
allowable, the allowance of such claims should not be delayed.

Form paragraphs
7.43, 7.43.01, and
7.43.02 may be used to indicate allowable subject
matter.

¶ 7.43
Objection to Claims, Allowable Subject Matter

Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including
all of the limitations of the base claim and any intervening claims.

Claim [1] would be
allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in
this Office action.

Examiner Note:

This form paragraph is to be used
when (1) the noted independent claim(s) or (2) the noted dependent claim(s), which depend
from an allowable claim, have been rejected solely on the basis of35 U.S.C. 112(b) or pre-AIA
35 U.S.C.
112, second paragraph, and would be allowable if amended to overcome
the rejection.

Claim [1] would be
allowable if rewritten to overcome the rejection(s) under 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in
this Office action and to include all of the limitations of the base claim and any intervening
claims.

Examiner Note:

This form paragraph is to be used
only when the noted dependent claim(s), which depend from a claim that is rejected based on
prior art, have been rejected solely on the basis of 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and
would be allowable if amended as indicated.

¶ 7.43.04
Suggestion of Allowable Drafted Claim(s), Pro Se

The following claim [1]
drafted by the examiner and considered to distinguish patentably over the art of record in
this application, [2] presented to applicant for consideration:

¶ 7.97
Claims Allowed

707.07(k) Numbering Paragraphs

It is good practice to number the
paragraphs of the Office action consecutively. This facilitates their identification
in the future prosecution of the application.

707.07(l) Comment on Examples

The results of the tests and
examples should not normally be questioned by the examiner unless there is reasonable
basis for questioning the results. If the examiner questions the results, the
appropriate claims should be rejected as being based on an insufficient disclosure
under 35
U.S.C. 112(a) or pre-AIA 35 U.S.C.
112. In re Borkowski, 422
F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP § 2161 through
§
2164.08(c) for a discussion of the written description and
enablement requirements of 35 U.S.C 112, first paragraph.
The applicant must reply to the rejection, for example, by providing the results of
an actual test or example which has been conducted, or by providing relevant
arguments that there is strong reason to believe that the result would be as
predicted. Care should be taken that new matter is not entered into the
application.

If questions are present as to
operability or utility, consideration should be given to the applicability of a
rejection under 35 U.S.C. 101. See
MPEP
§ 706.03(a) and § 2107et seq.

707.08
Reviewing and Initialing by Assistant Examiner [R-11.2013]

The full surname of the examiner who
prepares the Office action will, in all cases, be typed at the end of the action. The
name and telephone number of the examiner who should be called if the application is to
be discussed or an interview arranged will also be provided in the Office action. Form
paragraph 7.100, 7.101 or 7.102 should be used.

¶ 7.100
Name And Number of Examiner To Be Contacted

Any inquiry concerning this communication should be directed to [1] at telephone number [2].

Examiner Note:

1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.

2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action.
This could be either the non-signatory examiner preparing the action or the signatory examiner.

3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.

¶ 7.101
Telephone Inquiry Contacts- Non 5/4/9 Schedule

Any inquiry concerning this communication or earlier
communications from the examiner should be directed to [1] whose telephone number
is [2]. The examiner can normally be reached on [3] from
[4] to [5].

If attempts to reach the examiner by telephone are
unsuccessful, the examiner’s supervisor, [6], can be reached on [7].
The fax phone number for the organization where this application or proceeding is assigned is
571-273-8300.

Information regarding the status of an application may be
obtained from the Patent Application Information Retrieval (PAIR) system. Status information
for published applications may be obtained from either Private PAIR or Public PAIR. Status
information for unpublished applications is available through Private PAIR only. For more
information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you
have questions on access to the Private PAIR system, contact the Electronic Business Center
(EBC) at 866-217-9197 (toll-free).

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual area code and
phone number.

3. In bracket 3, insert the days that you work every
week, e.g. “Monday-Thursday” for an examiner off every Friday.

¶ 7.102
Telephone Inquiry Contacts- 5/4/9 Schedule

Any inquiry concerning this communication or earlier
communications from the examiner should be directed to [1] whose telephone number
is [2]. The examiner can normally be reached on [3] from
[4] to [5]. The examiner can also be reached on alternate
[6].

If attempts to reach the examiner by telephone are
unsuccessful, the examiner’s supervisor, [7], can be reached on [8].
The fax phone number for the organization where this application or proceeding is assigned is
571-273-8300.

Information regarding the status of an application may be
obtained from the Patent Application Information Retrieval (PAIR) system. Status information
for published applications may be obtained from either Private PAIR or Public PAIR. Status
information for unpublished applications is available through Private PAIR only. For more
information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you
have questions on access to the Private PAIR system, contact the Electronic Business Center
(EBC) at 866-217-9197 (toll-free).

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual area code and
phone number.

3. In bracket 3, insert the days that you work every
week, e.g. “Monday-Thursday” for an examiner off on alternate Fridays.

5. In bracket 6, insert the day in each pay-period that
is your compressed day off, e.g. “Fridays” for an examiner on a 5/4/9 work schedule with
the first Friday off.

6. In bracket 7, insert your SPE’s name.

7. In bracket 8, insert your SPE’s area code and phone
number.

The surname or initials of the
examiner who prepared the action and the date on which the action was prepared should
appear at the end of the action. If this examiner does not have the authority to sign
the action, he or she should initial as appropriate, and forward the action to the
authorized signatory examiner for signing.

707.09
Signing by Primary or Other Authorized Examiner [R-11.2013]

The electronic signature of the
Supervisory Patent Examiner, Primary or other authorized examiner is inserted to sign
Office actions. All Office actions and other correspondence should be signed
promptly.

707.10
Entry [R-11.2013]

The action, signed by the authorized
examiner, is soft scanned into the IFW and a copy is given electronically or mailed to
applicant.

707.11
Date [R-08.2012]

The mailing date should not be typed
when the Office action is written, but should be stamped or printed on all copies of the
action after it has been signed by the authorized signatory examiner and the copies are
about to be mailed.

707.12
Mailing [R-11.2013]

Access to the examiner’s action is
given electronically or copies are mailed after the original, initialed by the assistant
examiner, if any, and signed by the authorized signatory examiner, has been soft scanned
into the image file wrapper.

707.13
Returned Office Action [R-11.2013]

Office actions are sometimes returned
to the Office because the United States Postal Service has not been able to deliver
them. Upon receipt of the returned Office action, the Technology Center (TC) technical
support staff will check the application file record to ensure that the Office action
was mailed to the correct correspondence address. If the Office action was not mailed to the correct correspondence address, it
should be stamped “remailed” with the remailing date and mailed to the correct
correspondence address. The period running against the application begins with the date
of remailing. If the Office action was mailed to the correct correspondence address and
it was addressed to an attorney or agent, a letter along with a copy of the Office
action may be sent to the applicant, or the first named inventor if more than one
inventor is the applicant, informing the applicant of the returned action. The time
period for reply to the Office action will be restarted to run from the mailing date of
the letter informing applicant of the returned action .

A copy of the letter and a copy of
the envelope should be added to the IFW. If the period dating from the remailing elapses
with no communication from applicant, the application is abandoned.